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Aggressive trademark enforcement is a complex business decision

News and Notes Focused on the 3 Public Faces of IP Law

  • Brand Image Protection - Trademark Law
  • Visual Image Protection - Copyright Law
  • Personal Image Protection - Right of Publicity Law

The Image Protection Law blog has been created in order to share stories and information on the legal aspects of: 1) the marketplace reputation of a company or product captured in its trademark, 2) published or publicly-displayed artwork, photography, and any created visual design, and 3) use of a person's photograph or likeness for product promotion or other commercial purposes.

The "IP3" share at least one thing in common: Image is everything. In these posts let's look at what that means in the realm of intellectual property in the news, but let's also be prepared to explore if there's something more beyond "everything." Don't forget, the intellectual in "intellectual property" doesn't mean smart or brainy, although by nature true creators often are. The word is used to refer to any creation, i.e., a "product of the mind." While this blog will be regularly updated, you are encouraged to share your thoughts on these posts.

The ongoing story of a Utah-based online retailer and its efforts to preserve its trademark interests in the word “backcountry” provides a fascinating look into the careful consideration a business must conduct of potential outcomes of such a campaign. While we support vigorous protection of intellectual property, thought must be given to the potential pros and cons of each step taken in this effort.

Is “backcountry” generic?

The Colorado Sun has been publishing a series of articles about Backcountry.com’s attempts to protect “backcountry” for its own commercial uses through trademark. Backcountry.com is a large company that registered its first backcountry trademark for “online retail store services” in 2008.

After the company filed multiple federal trademark lawsuits and petitions before the U.S. Patent and Trademark Office to cancel the trademarks of others – especially small business owners - containing “backcountry” in some way, it faced negative backlash. In addition, it sent “dozens upon dozens” of cease-and-desist letters.

Examples of brands Backcountry.com has opposed include Backcountry Nitro (coffee), Weston Backcountry (skis and split boards), Cripple Creek Backcountry (ski equipment and clothing), Backcountry Babes (avalanche education), Backcountry Denim Co. (jeans), Backcountry eBikes, American Backcountry (T-shirts) and Backcountry Discovery Routes (GPS maps of remote areas).

Backcountry Discovery Routes, a nonprofit, responded to Backcountry.com’s USPTO petition with a petition of their own to cancel Backcountry.com’s trademarks based on the genericness of the word “backcountry.” Another defendant said in The Sun that trademarking “backcountry” is like “trying to trademark ‘road’ or ‘beach’ or ‘mountain.’”

Examples of public responses, according to The Sun:     

  • A Facebook page urging a boycott of Backcountry.com had 4,500 members as of Nov. 5.
  • A GoFundMe site supports the defense of the Michigan owner of Marquette Backcountry Ski against Backcountry.com. This is the only lawsuit defendant who has not settled with Backcountry.com.
  • Internet-based forums are “galvanizing opposition” to the plaintiff.

The owner of Marquette Backcountry Ski is quoted as pointing out that Backcountry.com’s efforts “didn’t resonate well with the market” and that they have brought focus to the challenges of establishing a small business. Broadly, it seems there is some public perception that Backcountry.com is a giant company making it tough for the little guy trying to make a living.

Public apology

Backcountry.com posted an apology letter on its website on Oct. 6 in response to the public outcry. The company said it had “fumbled” in its aggressive trademark strategy and that it would withdraw its suit against Marquette Backcountry Ski, reported The Sun. Signed by its CEO, the letter said it had tried to resolve these disputes without legal action and that it was a “last resort” and that it had “misjudged the impact of [its] actions.”

Takeaways

These disputes remind every business owner considering options for protecting its trademarks and other intellectual property that decision-making in this area is not only about the legal issues, but also about reputation and professional relationships. An experienced trademark lawyer can help such a business understand and consider the wide array of issues involved.

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